For most defendants, patent litigation is a high stakes situation that justifies a significant investment in building an effective defense strategy. At the heart of any successful defensive strategy is comprehensive patent research.
Recent legal decisions are heightening the need for, and in some ways, changing the focus of patent research when preparing for litigation. As the litigation landscape evolves, so too must your approach to patent research. To meet this evolving challenge, we explore the crucial elements that should be a part of your patent research when preparing your defense.
Evaluate all possible sources to build a stronger prior art search strategy
To put you in the best possible position to invalidate the claims being asserted, the value of comprehensive, “scour the earth” invalidity searches cannot be understated. But how can a patent litigator know their invalidity searches are exhausting all possible sources?
A comprehensive invalidity search should include, at a minimum, an electronic based patent and non-patent literature (NPL) global search as well as a citation and class/subclass search.
The invalidity search scope should specifically be tailored to the asserted claim limitations to ensure that the most relevant prior art is being cited, and to reduce noise.
Prior art not published in English, and obscure non-traditional publications such as manuals, YouTube videos, or conference proceedings, also qualify as relevant prior art for invalidity purposes. So, to ensure thoroughness you may also want to consider a non-English native language search as well as a physical library or patent office searches.
For many jurisdictions, historical full text patent documents are only available in the local language and not accessible electronically. Searches of NPL databases can be beneficial in helping you determine where to focus your physical search efforts.
Create a more strategic approach through an in-depth prosecution history analysis
Prosecution history analysis is also a very important step when crafting the best defensive position. One compelling reason to analyze the asserted patent’s prosecution history is to uncover the patent examiner’s search strategy during prosecution. The examiner’s search history provides a wealth of knowledge of “where they have” and “where they have not” searched already. Knowing this information is powerful and will allow you to create the most effective invalidity search strategy—increasing your chances of finding “invalidating” prior art that had never been found, or considered, by the examiner.
Understanding the asserted patents legal status, the patent family structure, rejections/objections raised during prosecution, and other attempts to invalidate any claim limitations will help also guide your defensive strategy. Actions taken by the applicant during prosecution, could potentially render the asserted patent unenforceable. Furthermore, and in view of the recent Cellect Opinion, it is possible that an asserted patent could be deemed expired without the timely filing of a terminal disclaimer.
Evaluate litigation trends in different courts and jurisdictions
Whether to file a motion to transfer venue, and when to do so, can seriously disrupt the plaintiff’s overall litigation strategy. The disruption can create leverage for settlement discussions and/or can negatively impact the plaintiff’s ability to successfully try their case. In any event, it would be advantageous for the defense to move quickly when challenging venue.
Conducting proper due diligence and being aware of venues that historically favor plaintiff’s vs defendant’s (outcomes and verdicts), the number of cases filed, timeliness, and costs should all be considered. It’s also important to note how the US Supreme Court Case- TC Heartland vs Kraft Foods (2017) limits a plaintiff’s ability to file suit in venues historically favorable to plaintiff’s.
Monitor similar cases to capture new insights that could improve your odds
The organization asserting their IP may be actively involved in litigation with other parties in other jurisdictions. By researching IP litigation case data, you can find these potentially relevant cases, and actively monitor them for new filings, decisions and outcomes. Automated alerting allows you to continuously monitor these cases and receive an alert anytime there is new case activity. These alerts can provide highly valuable insights (and potentially new references) to help you evolve your defense strategy.
These are just a few examples of how comprehensive patent research can have a meaningful impact on your defensive strategy and put you in the best position to succeed in a patent infringement case.
To learn more about how expert patent research can improve your odds, contact our team of experts.